Case 1:16-cv-00909-KBF Document 1 Filed 02/05/16 Page 1 of 15

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
x
:
AIRWAIR INTERNATIONAL LTD., a company :
of the United Kingdom,
:
:
Plaintiff,
:
:
- against :
:
ESQUIRE FOOTWEAR LLC, a New York limited :
liability company,
:
:
Defendant.
:
x

Index No.

COMPLAINT AND
DEMAND FOR JURY TRIAL

Plaintiff, AirWair International Ltd., alleges as follows:

PARTIES
1.

Plaintiff AIRWAIR INTERNATIONAL LTD. is a wholly owned subsidiary of

Dr. Martens AirWair Group Ltd. and is engaged in the design, manufacture, marketing, and sale
of Dr. Martens footwear (AirWair International Ltd. and Dr. Martens AirWair Group Ltd. are
referred to collectively hereafter as AirWair). AirWair International Ltd. is a company of the
United Kingdom, located and doing business at Cobbs Lane, Wollaston, Wellingborough,
Northamptonshire, NN29 7SW, United Kingdom.
2.

On information and belief, Defendant ESQUIRE FOOTWEAR LLC (Esquire

or Defendant) is a New York limited liability company located and doing business at 385 5th
Avenue, 2nd Floor, New York, New York, 10016.
3.

Esquire markets, distributes, and sells footwear products in the United States and

within this District through various retailers.

See www.esquirefootwear.com.

footwear products are the subject matter of this action.

Esquires

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JURISDICTION AND VENUE

4.

This Court has subject matter jurisdiction under 15 U.S.C. 1121 and 28 U.S.C.

1338(a), in that this case arises under the trademark laws of the United States, 15 U.S.C.
1051 et seq.
5.

This Court has pendant jurisdiction under 28 U.S.C. 1338(b), in that this case

arises under claims joined with a substantial and related claim under the trademark laws of the
United States.
6.

Venue is proper in this District pursuant to 28 U.S.C. 1391 because Defendant

conducts business within this District and has engaged in, and continues to engage in, acts of
advertising and offering services and retail goods and products to consumers located within this
District.
FACTS COMMON TO ALL COUNTS
7.

AirWair is headquartered in the village of Wollaston, England and, through its

predecessor company, has manufactured footwear since 1901, and has been manufacturing and
marketing Dr. Martens footwear since 1960. Dr. Martens footwear is famous worldwide, and
has been sold in England and throughout Europe; in Japan, China, Korea, Malaysia, Hong Kong,
Thailand, Vietnam, and other Asian countries; in the United States, Canada, Mexico, and Central
and South America; in Australia and New Zealand; and in the Middle East.
8.

Since as early as 1984, Dr. Martens boots, shoes, and sandals have been marketed

and sold in the United States using a distinctive trade dress that features yellow stitching in the
welt area of the sole, a two-tone grooved sole edge, the distinctive DMS sole pattern, and a black
fabric heel loop.
9.

Dr. Martens footwear is widely recognized and extremely popular and has

achieved recognition as ranking among the worlds greatest and most recognizable brands. The
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distinctive trade dress of its iconic boots and shoes has been used by the company since 1960 and
is world famous. Over the past 30 years, millions of pairs of shoes, boots, and sandals with the
distinctive trade dress have been sold in the United States.
10.

AirWair holds many registrations for its trade dress throughout the world

including the following registrations in the United States Patent and Trademark Office:
Trade Dress Mark1

Design Element (where

applicable)

Goods/Service
Class 25: Footwear

Footwear Design
(The DMS
undersole)
*(incontestable mark)
2,102,468
10/07/1997

Notes: The mark consists of the

design of an undersole. The
phantom lining is not a part of the
mark, but merely indicates the
position of the mark.

Attached as Exhibit 1

Class 25: Footwear

Footwear Design
*(incontestable mark)
2,437,750
03/27/2001

Notes: The mark consists of a welt

stitch located around the perimeter
of footwear. The phantom lining is
not a part the mark, but merely
indicates the position of the mark.
The drawing of the welt stitch is
lined for the color yellow and claim
is made to color.

Attached as Exhibit 2

An * denotes that a declaration of continued use has been filed under Section 15 of the
Lanham Act and the mark has become incontestable.
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Class 25: Footwear

Footwear Design
*(incontestable mark)
2,437,751
03/27/2001

Notes: The mark consists of the

combination of yellow stitching in
the welt area and a two-tone
grooved sole edge. The drawing of
the welt stitch is lined for the color
yellow, and claim is made to color.

Attached as Exhibit 3

Class 25: Footwear

Footwear Design
2,104,349
10/7/1997
(Supp.)

Notes: The mark consists of the

design of a sole edge including
longitudinal ribbing, and a dark
color band over a light color. The
phantom lining is not a part of the
mark, but merely indicates the
position of the mark.

Attached as Exhibit 4

Class 25: Footwear

Footwear Design
2,341,976
04/11/2000
(Supp.)

Notes: The mark consists of

longitudinal ribbing and a dark
color band over a light color on the
outer sole edge, welt stitching, and
a tab located at the top back heel of
footwear.

Attached as Exhibit 5

11.

All of the above trade dress of Dr. Martens footwear (Dr. Martens Trade Dress)

has been in use in the United States since at least 1984.

12.

AirWair has filed declarations of continued use under Sections 8 and 15 of the

Lanham Act for Dr. Martens Trade Dress marks referenced in Exhibits 1, 2, and 3, and those
marks have thus become incontestable.

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13.

The Dr. Martens Trade Dress is unique and distinctive when applied to the high-

quality Dr. Martens footwear and related merchandise, and identifies the merchandise as highquality goods from AirWair. The registration of these marks constitutes prima facie evidence of
their validity, and conclusive evidence of AirWairs exclusive right to use the Dr. Martens Trade
Dress in connection with the goods identified therein and other commercial goods.
14.

The Dr. Martens Trade Dress marks qualify as famous marks, as that term is used

in 15 U.S.C. 1125(c)(1), and such marks have been continuously used and never abandoned.
15.

In 2010, AirWair celebrated the 50th anniversary of its classic Dr. Martens

footwear with its distinctive Trade Dress. Examples of classic Dr. Martens footwear, including
the 1460 boot, are shown below.

16.

The Dr. Martens Trade Dress and each of the distinctive elements thereof are

distinctive or have acquired distinctiveness, and are nonfunctional.

17.

AirWair is informed and believes that Defendant Esquire has marketed,

distributed, and sold boots that are confusingly similar to and that unlawfully copy the Dr.
Martens Trade Dress and various distinctive features of Dr. Martens footwear in violation of
AirWairs rights. These boots unlawfully copy and use distinctive features of Dr. Martens

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footwear, including an exact copy of the DMS undersole pattern (incontestable U.S. registration
no. 2,102,468).

Genuine Dr. Martens 1460 Boot

18.

Esquire Solid Combat Rain Boot

As shown below, the Infringing Footwear contains an exact copy of the DMS

Undersole pattern, and is likely to cause confusion as to the source, sponsorship, or origin of the
Infringing Footwear:

Genuine Dr. Martens DMS Undersole

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Esquire Infringing Undersole

19.

The infringing styles manufactured, marketed, and sold by Defendant include the

solid combat rain boot in clear, floral, and black (collectively, the Infringing Footwear),
pictured in Exhibit 6 attached hereto.
20.

The Infringing Footwear was offered for sale, advertised, and promoted in the

United States through retailers, such as www.forever21.com and www.pacsun.com, and on

information and belief, at the Esquire show room in New York City.
21.

AirWair is informed and believes that the Infringing Footwear is regularly sold

throughout the United States, including in New York, and particularly in the Southern District of
New York.
22.

Esquires offering for sale and sale of the Infringing Footwear is likely to cause

and has caused confusion between Dr. Martens footwear and Esquires footwear.
23.

Upon information and belief, Esquire is familiar with the Dr. Martens brand and

its famous Trade Dress.

Esquire intentionally copied the Dr. Martens Trade Dress in its

Infringing Footwear in order to capitalize on the reputation and fame of the Dr. Martens brand.
This is an exceptional case of infringement within the meaning of 15 U.S.C. 1117(b) and

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1117(a)(3) because Esquire knowingly and intentionally sold the Infringing Footwear, and
AirWair is therefore entitled to treble damages and attorneys fees.
24.

The use of the Dr. Martens Trade Dress on the Infringing Footwear suggests a

sponsorship and affiliation that does not exist.

25.

Esquire has no right to use the Dr. Martens Trade Dress.

Esquires sale,

advertisement, distribution, and promotion of the Infringing Footwear in the United States is
without authorization or consent from AirWair.
26.

Esquires conduct in copying the Dr. Martens Trade Dress has been systematic

and deliberate. Esquire has copied the Dr. Martens Trade Dress, and the overall style and
configuration of Dr. Martens boots and shoes and its exact DMS sole pattern, in a deliberate and
calculated attempt to trade upon the popularity and distinctive appearance and design of Dr.
Martens footwear.
27.

By reason of Esquires acts, AirWair has suffered and will continue to suffer

damage to its business, reputation, and goodwill, and the loss of sales and profits AirWair would
have realized but for Esquires acts. Unless restrained and enjoined, Esquire will continue to
engage in the acts complained of and irreparably damage AirWair. AirWairs remedy at law is
not adequate to compensate AirWair for all the resulting injuries arising from Esquires actions.
COUNT I
Trademark Infringement Under Sections 32 of the Lanham Act
(15 U.S.C. 1114)
28.

AirWair hereby incorporates each and every allegation set forth in the foregoing

paragraphs as if set forth herein full.

29.

Defendant has, on or in connection with footwear products, used in commerce

subject to regulation by the U.S. Congress, a reproduction, counterfeit, copy or colorable

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imitation of the Dr. Martens Trade Dress in connection with the sale, offering for sale,
distribution, and/or advertising of goods and services, which use is likely to cause confusion, or
to cause mistake, or to deceive.
30.

Defendant has, on or in connection with footwear products, reproduced,

counterfeited, copied and/or imitated the Dr. Martens Trade Dress and has applied such
reproductions, counterfeits, copies and/or colorable imitations to footwear, signs, displays,
advertisements, promotional materials, packaging, website content, and other materials used in
commerce in connection with the sale, offering for sale, distribution, or advertising of goods and
services, which use is likely to cause confusion, or to cause mistake, or to deceive.
31.

Defendant is acting and has acted with knowledge that its copying and use of the

Dr. Martens Trade Dress is unauthorized, and such imitation is intended to cause confusion, or to
cause mistake, or to deceive.
32.

Defendants acts are in violation of 15 U.S.C. 1114, and AirWair has been and

is likely to be damaged by these acts.

COUNT II
Federal Unfair Competition and False Designation of Origin under Section 43(a) of the
Lanham Act
(15 U.S.C. 1125(a))
33.

AirWair hereby incorporates each and every allegation set forth in the foregoing

paragraphs as if set forth herein full.

34.

Defendants unlawful copying and use of the Dr. Martens Trade Dress in

connection with its footwear products is a false and misleading designation of origin and a false
and misleading representation of facts, which:

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(a)

is likely to cause confusion, or to cause mistake, or to deceive as to the

affiliation, connection, or association of Defendant with AirWair, or as to
the origin, sponsorship, or approval of Defendants goods or commercial
activities by AirWair; and/or

(b)

in commercial advertising or promotion, misrepresent the nature,

characteristics, or qualities of Defendants goods, services, or commercial
activities.

35.

Defendants acts are in violation of 15 U.S.C. 1125(a), and AirWair has been

and is likely to be damaged by these acts.

COUNT III
Federal Trademark Dilution in Violation of
Lanham Act Section 43(c)
(15 U.S.C. 1125(c))
36.

AirWair hereby incorporates each and every allegation set forth in the foregoing

paragraphs as if set forth herein full.

37.

The Dr. Martens Trade Dress is distinctive and famous in the United States.

Defendant has used and is using trade dress on its footwear products that is substantially
indistinguishable from the Dr. Martens Trade Dress, after it became famous.
38.

On information and belief, Defendant acted with knowledge of the fame and

reputation of the Dr. Martens Trade Dress with the purpose of usurping such rights and to
willfully and intentionally confuse, mislead, and deceive members of the public.

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39.

Defendants actions have and are likely to dilute, blur, and tarnish the distinctive

quality of the Dr. Martens Trade Dress, and lessen the capacity of the Dr. Martens Trade Dress to
identify and distinguish the companys products.
40.

Defendants acts are in violation of 15 U.S.C. 1125(c), and AirWair has been

and is likely to be damaged by these acts. Unless Defendant is restrained, AirWair will continue
to suffer damages and injury to its reputation and goodwill.
41.

Because Defendant acted willfully and intentionally to trade on AirWairs

reputation and/or cause dilution of its famous Dr. Martens Trade Dress, AirWair is entitled to
damages, extraordinary damages, fees and costs pursuant to 15 U.S.C. 1125(c)(2).
COUNT IV
Common Law Trademark Infringement and Unfair Competition
Under New York Law
42.

AirWair hereby incorporates each and every allegation set forth in the foregoing

paragraphs as if set forth herein full.

43.

As set forth in the preceding paragraphs, AirWair is the owner of various

registered trademarks. The Dr. Martens Trade Dress is distinctive and famous.
44.

Defendants use of the Dr. Martens Trade Dress is without the consent of AirWair

and constitutes a use in commerce of a reproduction, counterfeit, copy, or colorable imitation of

AirWairs registered trademarks in connection with the sale, offering for sale, distribution, and
advertising of Defendants goods and services. AirWair is informed and believes, and thereon
alleges, that Defendants use of the Dr. Martens Trade Dress is likely to cause confusion, or to
cause mistake or to deceive actual and potential customers for these goods and services.

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45.

AirWair is informed and believes, and thereon alleges, that Defendants use of the

Dr. Martens Trade Dress has caused and is likely to cause confusion in the trade and among the
public and constitutes infringement and unfair competition.
46.

Defendants acts of unfair competition and false designation of origin have caused

and will continue to cause damage and irreparable harm to AirWair, and are likely to continue
unabated, thereby causing further damage and irreparable harm to AirWair and to the valuable
goodwill symbolized by and associated with its distinctive Dr. Martens Trade Dress unless
enjoined and restrained by the Court.

AirWair has no adequate remedy at law, and if

Defendants activities are not enjoined, AirWair will continue to suffer irreparable harm and
injury.
47.

Defendants wrongful use of the Dr. Martens Trade Dress was knowing and

48.

As a result of Defendants activities, AirWair has been damaged in an amount to

willful.

be ascertained at trial.
PRAYER
Plaintiff respectfully prays:
A.

A preliminary and permanent injunction enjoining Defendant, its officers,

shareholders, agents, servants, employees, attorneys, successors and assigns, suppliers,

manufacturers, distributors, business partners, e-tailers, retailers, and those in privity with them,
and those persons in active concert or participation with any of them who receive actual notice of
the judgment by personal service or otherwise, from manufacturing, marketing, distributing or
selling the Infringing Footwear or any other footwear products that use, imitate or copy any of
the Dr. Martens Trade Dress or Trademarks, as illustrated in Exhibits 1-5, or any combination of
them.
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B.

An Order directing Defendant to file with this Court and serve on

AirWairs counsel within 30 days after service of an injunction, a report under oath setting forth
in detail the manner and form in which Defendant has complied with the injunction.
C.

An Order that (1) all point-of-sale materials, labels, signs, boxes, prints,

catalogs, line sheets, marketing materials, internet web pages, metatags, packages, papers, other
trade dress, and advertisements in the possession or control of Defendant bearing images,
illustrations, or representations of the enjoined footwear, Trade Dress, Dr. Martens name, and
undersole patterns, and all plates, molds, matrixes, and other means of making the same, be
delivered to AirWairs counsel or destroyed in accordance with written instructions from
AirWair; (2) that Defendant disclose the identities of the vendors, manufacturers, distributors,
suppliers, retailers, and e-tailers of the Infringing Footwear, sole molds, and undersole; (3) all
footwear bearing any of the Trade Dress features identified in Exhibits 1-5 hereto be delivered to
AirWair or destroyed in accordance with written instructions from AirWair; and (4) all internet
advertising, including keywords, adwords, metatags, sponsored ads, links, and other advertising
that uses or refers to Dr. Martens, DOCS, DMs, or any version of the Dr. Martens Trade Dress
be immediately discontinued and removed from operation or view.
D.

An accounting for Defendants profits arising from Defendants unfair

competition and trademark infringement and an award of Defendants profits to Plaintiff,

including disclosure of the number of pairs of Infringing Footwear sold in the United States and
internationally and an accounting for the gross revenue derived from sale of the Infringing
Footwear.
E.

An award of damages sustained by Plaintiff.

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F.

In the alternative to actual damages and profits, an award of statutory

damages in an amount of not more than $1,000,000 per counterfeit mark per type of services
and/or goods sold or offered for sale by Defendant.
G.

An award of treble the actual damages awarded.

H.

Pre-judgment and post-judgment interest on the above damage awards.

I.

An award of costs and reasonable attorneys fees and expenses incurred by

AirWair in connection with this action.

J.

Such other and further relief which this Court may deem just.

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JURY DEMAND
Plaintiff AirWair International Ltd. hereby requests trial by jury in this action on all
issues so triable.

Dated:

February 5, 2016
New York, New York
Respectfully submitted,
BRYAN CAVE LLP
By: /s/ Thomas J. Schell
Thomas J. Schell
1290 Avenue of the Americas
New York, New York 10104
Tel: (212) 541-2000
Fax: (212) 541-4630
tjschell@bryancave.com
Of counsel:
Marcy J. Bergman*
Stephanie A. Blazewicz*
560 Mission Street, 25th Floor
San Francisco, CA 94105-2994
Tel: (415) 675-3400
Fax: (415) 675-3434
marcy.bergman@bryancave.com
stephanie.blazewicz@bryancave.com
*(Motions to appear pro hac vice forthcoming)

Attorneys for Plaintiff AirWair International Ltd.

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